Insights: Patent marking

The new UK Intellectual Property (IP) Act is set to come into force on 1 October 2014.
One significant change for patent holders is in relation to patent marking.

A person found to be infringing a UK patent is considered to be an “innocent infringer” if they demonstrate during infringement proceedings that they were not aware and had no reasonable grounds for supposing that the patent existed. This is of significant consequence to patent holders since no damages or account of profits may be awarded against an innocent infringer. Hence, it is important for patent holders to mark their products so that any potential infringer would be aware of the existence of any patents.

Crucially, marking a product with the word “patent” or “patented” alone is not considered sufficient for alerting any potential infringer about the existence of a patent. Before entry into force of the UK IP Act, the existence of a patent could be demonstrated by marking a product with a patent number and the word “patent “ or “patented”, or by marking with a patent application number and the phrase “patent pending” or “patent applied for”. These requirements could be difficult to fulfil for a small product that is associated with a large number of patents, for example.

Entry into force of the UK IP Act on 1 October 2014 significantly improves the situation with regard to patent marking by allowing “virtual marking” of a product. Virtual marking allows a proprietor to mark their product with the word “patent” or “patented” together with a link to a webpage that provides details of the patents and/or patent applications associated with the product. The webpage must be accessible to the public free of charge, and the patent and patent application numbers listed must be clearly associated with the product. It is unlikely that a link to a company homepage will be suitable unless the products and patent numbers are clearly marked on that homepage.

As a consequence of these changes, a patent holder no longer has to mark the product itself with all relevant patent numbers. A further advantage is that the new virtual marketing provisions bring UK law into line with US law which has allowed virtual marking since September 2011. As such, a proprietor will be able to mark a product with a single webpage listing both UK and US patents, thereby simplifies marking across territories.

The regulation changes also make it easier to amend marking upon lapse of a patent. Falsely marking a product as patented is a criminal offense even if this false marking is due to the lapse of a previously valid patent. Patent holders often forget to remove a patent number from a product once the patent has lapsed, and even if they remember the removal can be difficult to effect. With virtual marking, when a patent lapses the proprietor will simply have to amend the relevant webpage rather than remark all products, as was previously required.